Ruling Puts Microsofts Windows Trademark at Risk

By Steven Vaughan-Nichols |
Posted 2004-02-11

Microsoft recently landed several blows in Europe against Lindows.com Inc. in its ongoing "Windows" trademark battle. However, the Redmond firm on Tuesday suffered a potentially major setback stateside.

The U.S. District Court in Seattle ruled in favor of Lindows.coms assertion that the jury should consider the historical use of the term windows in graphical user interfaces rather just its current usage as being synonymous with Microsoft Windows.

The court also ruled that after a word is declared generic it would continue to be generic, and thus could not be made a corporate trademark. Chief District Judge John Coughenour said in his Tuesday ruling: "If the term is found to be generic it cannot be the subject of trademark protection under any circumstances."

This is not the first time the court has cast doubt [PDF document] about Microsofts use of windows as a trademark in the case. In a March, 2002 ruling, Judge Coughenour noted, "that there are serious questions regarding whether Windows is a non-generic name and thus eligible for the protections of federal trademark law."

The judge also ruled this week that until Microsoft appeal is completed, the previously scheduled March 1, 2004 trial would not go forward. Microsoft will appeal the Courts ruling to the U.S. Court of Appeals for the Ninth Circuit. In the meantime, Lindows.com will be able to keep using its name until a final decision in the case is made.

Robert Andris, a partner and trademark specialist at the Redwood, Calif., law firm of Ropers Majeski Kohn & Bentley LLP explained that in the Ninth District Court normally an appeal wouldnt be heard until after the case is over. This time though the judge is giving Microsoft a chance to appeal his decision. The Court will then decide whether to fast track Microsofts appeal or to let it wait until the trials end.

In that event, were the jury to find for Lindows because it decided that windows was historically a generic term for computer GUIs, Andris said, "it would appear that Microsoft would be at risk of losing its Windows trademark all together."

"The rulings are a major victory for Lindows.com. Essentially, the Courts ruling confirms that a company, no matter how much money it spends, cannot buy a word out of the English language," said Daniel Harris, Lindows.coms lead trial counsel in a prepared statement.

In an eWEEK.com interview, Lindows.com Chief Executive Officer Michael Robertson said, "The Judges rulings completely turns the case around and confirm arguments weve been making from day one in this battle. Microsoft is now on the run trying to avoid a trial which they initially sought."

Robertson continued, "Microsoft latest move to appeal will add a lengthy delay, but the day will come when Microsoft will be forced to face Lindows.com and desktop Linux. Not just in the courtroom, but in the marketplace as well. Microsoft may be able to forestall that day of reckoning with their money and army of attorneys. But Lindows.com is not going away in spite of Microsofts tactics and neither is desktop Linux."

Microsofts spokesperson Stacy Drake said Microsoft would have liked the court to instruct any future jury to only consider the common present day use of Windows. She also said Microsoft was pleased to have been granted the right to appeal the decision.